The Complainant is Pet Plan Ltd of Guildford, Surrey, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas.
The disputed domain name <freepetplan.com> is registered with Internet Domain Service BS Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2016. On January 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2016.
The Respondent filed email communications with the Center on February 2, 3, 10, 11 and 21, 2016 and the Complainant made a Supplemental Filing on February 16, 2016. The Respondent made a further submission on March 1, 2016.
The Center appointed Alistair Payne as the sole panelist in this matter on February 8, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant provides pet insurance for domestic and exotic pets both in the United Kingdom and around the globe through various licensees and currently in the United States, Canada, Australia, New Zealand, Brazil, Germany, and the Netherlands. In addition, it offers insurance to pet care professionals and a pet finding service. The Complainant was founded in 1976, is based in Brentford, United Kingdom and is now a subsidiary of Allianz Insurance plc. The Complainant has continually operated its business under the PETPLAN name or mark and owns trade mark registrations for PETPLAN in various countries, including in the United States under trade mark number 3161569 being a stylized word mark registration for PETPLAN dating from an application date of 2004 and in the United Kingdom for PETPLAN, also stylized under trade mark registration number 2052294 dating from an application date of 1996 (with a date of registration in the register in 1997). The Complainant owns various domain names incorporating its PETPLAN trade mark and operates its main websites at <petplan.co.uk> and <petplan.com>.
The disputed domain name was registered on January 15, 2002.
The Complainant submits that it owns registered trade mark rights as noted above. It says that the disputed domain name wholly incorporates its PETPLAN mark and only differs from the Complainant’s mark by the inclusion of the generic term “free”. The Complainant submits that this term does not distinguish the disputed domain name and in fact only enhances the potential for confusion, particularly in circumstances that the Complainant offers new subscribers to its UK website the opportunity to try the Complainant’s services free of charge for four weeks. As a result the Complainant says that the disputed domain name is confusingly similar to its PETPLAN mark.
The Complainant submits that the Respondent is not sponsored by or affiliated with the Complainant in any way, and has not given Respondent permission to use the Complainant’s trade marks. Nor, says the Complainant, is the Respondent commonly known by the disputed domain name and in this regard the Complainant notes that the Respondent registrant is a privacy service.
The Complainant says that the Respondent is using the disputed domain name to redirect Internet users to a website that resolves to a blank page and lacks content. In this manner, says the Complainant, the Respondent has failed to make use of the disputed domain name’s website and has therefore not demonstrated any attempt to make legitimate use of the disputed domain name and website. This says the Complainant evinces a lack of rights or legitimate interests in the disputed domain name and does not amount to a bona fide offering of goods or services. Further, says the Complainant, the disputed domain name is being offered for sale in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the disputed domain name which serves as further evidence of Respondent’s lack of rights and legitimate interests.
The Complainant notes that the disputed domain name was registered originally on January 15, 2002, which is well after the Complainant registered its PETPLAN trademark with the UK IPO and the USPTO in 1996 and 2006, respectively. It says that as the Respondent registered the disputed domain name well after the Complainant’s PETPLAN trademark became famous and this demonstrates that the Respondent registered the disputed domain in bad faith. The Complainant notes that as the disputed domain name appears to have always been registered by a privacy service it is impossible to ascertain the date on which the current Respondent registered it.
The Complainant submits that the Respondent should have known of its mark and business even at the initial registration date of the disputed domain name, as it has been in business for over 35 years, is licensed in numerous countries and is consistently ranked the number one pet insurance provider in the UK. Also, as a pioneer in its field, the Complainant has numerous awards to its credit including Consumer Moneyfacts Awards – Highly Commended (2014) and Your Dog Best Pet Insurance 2013 – Winner and Your Cat Best Pet Insurance 2013 – Winner which demonstrates the Complainant’s fame. Further, performing Internet searches across a number of Internet search engines for “free petplan” returns multiple links referencing the Complainant and its business.
The Complainant submits that the disputed domain name currently resolves to an inactive site and is not being used. It notes that past panels have found that bad faith “use” in the context of paragraph 4(a)(iii) of the Policy does not require a positive act on the part of the Respondent and that passively holding a domain name can constitute a factor in finding bad faith registration and use (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In this case, says the Complainant, the disputed domain name is confusingly similar to the Complainant’s trade marks, and the Respondent has made no use of the disputed domain name, factors which should be duly considered in assessing bad faith registration and use.
Additionally, the Complainant says that the disputed domain name can only be taken as intending to cause confusion amongst Internet users as to the source of the disputed domain name, and thus, the disputed domain name must be considered as having been registered and used in bad faith pursuant to paragraph 4(b)(iv) of the Policy, with no good faith use possible. The Complainant submits that where the disputed domain name incorporates the Complainant’s famous PETPLAN trademark in its entirety while adding the generic term “free”, there is no plausible good-faith reason or logic for the Respondent to have registered the disputed domain name, and “…the only feasible explanation for Respondent’s registration of the disputed domain name is that Respondent intends to cause confusion, mistake and deception by means of the disputed domain name”. Accordingly, says the Complainant, any use of the disputed domain name for an actual website could only be in bad faith.
The Complainant also submits that the Respondent is currently offering to sell the disputed domain name, which constitutes bad faith under paragraph 4(b)(i) of the Policy because the Respondent has demonstrated an intent to sell, rent, or otherwise transfer the disputed domain name for valuable consideration in excess of his out-of-pocket expenses. It says that it is well established that seeking to profit from the sale of a confusingly similar domain name that incorporates a third party’s trade mark demonstrates bad faith.
In addition that Complainant says that the fact that at the time of filing the Complaint the disputed domain name was registered through a privacy service and that the Respondent has failed to respond to the Complainant’s cease and desist letter from January 2015 is further evidence to support the inference that the disputed domain name was registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions by the Response due date.
A person asserting that he is the real owner of the disputed domain name has made various email filings after the due date for the Response including most recently on March 1, 2016. He asserts that he was not made aware of the Complaint until after the due date for response. However the Panel is satisfied that as required under the Policy and relevant rules, the Complaint was sent by email and notice of the Complaint by courier to the addresses confirmed by the Registrar as being in the WhoIs record for the disputed domain name in its verification email to the Center. If the listed Respondent as a privacy service failed to communicate the Complaint to its client then that is a matter between the real owner and the Respondent. As far as the Panel is concerned, communication of the Complaint has been made as required under the Policy and the Rules to the addresses listed in the verified WhoIs record. In any event the Panel notes that the Center responded to the alleged real owner’s email on February 4, 2016 inviting him to submit a substantive response, which could be admitted to the record in the discretion of the Panel as appropriate. At the date of this decision no substantive response has been received by the Center although some additional arguments were put forward in his email submission of March 1, 2016 which the Panel notes do not alter the Panel’s assessment on the merits in this case. Accordingly the Panel exercises its discretion to proceed to issue a decision and does not consider it appropriate or necessary to enter these emails or the Supplemental Filing made by the Complainant, to the record.
The Complainant has demonstrated that it owns registered trade mark rights for its PETPLAN mark as set out above. These registrations are for the term “petplan” written in a fancy stylized font. There is no other element to the registrations and therefore for the purposes of the analysis under the Policy, the Panel is satisfied that the dominant element of these registrations is the term “petplan”.
The disputed domain name wholly incorporates the Complainant’s PETPLAN trade mark and only differs from it by inclusion of the common English word “free”. The Panel finds that the inclusion of this generic word does not distinguish the disputed domain name from the Complainant’s PETPLAN trade mark and that the disputed domain name is confusingly similar to the Complainant’s trade mark. As a consequence the Complaint succeeds under the first element of the Policy.
The Complainant has submitted that the Respondent is not sponsored by or affiliated with the Complainant in any way and that it has not given the Respondent permission to use the Complainant’s trade marks. The Complainant also asserts that the Respondent is not commonly known by the disputed domain name. It notes further that the Respondent is a privacy service and that the disputed domain name resolves to a blank page and that there is no evidence that any use has been made of the disputed domain name. In addition the Complainant says the Respondent failed to reply to its cease and desist letter sent in January 2015 and further that the disputed domain name is advertised for sale on a Sedo domain name parking page for much more than its registration cost.
There is nothing before the Panel to indicate that the Respondent has any business, website or prior rights of any kind in the disputed domain name. Although the Panel is not necessarily persuaded by the evidence put forward by the Complainant concerning the price at which the disputed domain name is being offered for sale, this evidence aside there is nothing else on the record to rebut the prima facie case made out by the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complaint also succeeds under the second element of the Policy.
The disputed domain name was originally registered on January 15, 2002. There is nothing to indicate whether the Respondent or the real owner acquired the disputed domain name at a later date than this or not. Therefore the Panel will consider January 2002 as the relevant date of registration of the disputed domain name.
The Complainant filed its PETPLAN trade mark in the United Kingdom in 1996 and its United States registration, as listed above, was made much later in 2004. It submits however that its business was founded in 1976 and that it registered its main <petplan.co.uk> and <petplan.com> domain names in 1996 and that by the date of registration of the disputed domain name the Complainant’s business under the PETPLAN trade mark was well-established and that the mark has subsequently become “famous” and well-known as described in the Complainant’s submissions.
There is no evidence, as noted above, that the Respondent has made any use of the disputed domain name since its registration. Further, the real owner of the disputed domain name has been hidden by use of a privacy service and the Respondent or the real owner failed to respond to the Complainant’s cease and desist letter sent in 2015, or to the Complaint, whether before or after the due date for response. As a result there is no explanation for the Respondent’s failure to use the disputed domain name before the Panel.
In Telstra Corporation Limited v. Nuclear Marshmallows, supra, the panel found that the passive holding of a domain name could amount to registration and use in bad faith in circumstances that:
(i) the complainant’s trademark has a strong reputation and is widely known;
(ii) the respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;
(iii) the respondent has taken active steps to conceal its true identity;
(iv) the respondent has actively provided, and failed to correct, false contact details; and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate.
Although there is inadequate evidence on the record to support a finding that the Complainant’s PETPLAN mark was famous or well known by the date of registration of the disputed domain name, it does appear to the Panel that it enjoyed an established reputation by that date including an on-line presence under the <petplan.co.uk> and <petplan.com> domain names which were both registered in 1996. There is no evidence of the Respondent’s use of the disputed domain name and it has certainly taken active steps to conceal its identity by use of a privacy service. It would appear that the Respondent or the true owner has either provided false contact details or has not updated its contact details as otherwise it should have received notice of the Complaint following the Center’s communication to all known addresses in the verified “WhoIs” details. While the evidence of the offer for re-sale of the disputed domain name is unclear, it seems to the Panel that on balance it is more likely than not that the disputed domain name was registered with knowledge of the Complainant’s business and that this is an example of passive holding of a domain name in bad faith.
As a result the Panel finds that the Complaint succeeds under the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <freepetplan.com> be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: March 2, 2016